DCT

1:20-cv-01238

Top Brand LLC v. Cozy Comfort Co LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-01238, N.D. Ill., 06/18/2020
  • Venue Allegations: Plaintiffs allege venue is proper in the Northern District of Illinois because Defendants conduct substantial business in the district through online sales, including via their own interactive website, and because two of the Plaintiff companies are located in Illinois and have been directly impacted there.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their wearable blanket products do not infringe the Defendant’s design patent, that the patent is invalid and unenforceable, and that Defendants have engaged in false marking and unfair competition.
  • Technical Context: The dispute concerns the ornamental design of oversized, hooded, wearable blankets, a consumer apparel product category.
  • Key Procedural History: The complaint alleges that Defendants sent infringement complaints to Amazon.com, resulting in the removal of Plaintiffs' product listings. Plaintiffs also allege that Defendants failed to disclose material prior art to the USPTO during the prosecution of the patent-in-suit, which was identified during the prosecution of a related utility patent application.

Case Timeline

Date Event
2017-09-13 U.S. Patent No. D859,788 Application (Priority) Date
2018-09-13 Defendants file related utility patent application ('502 application)
2019-06-05 USPTO issues Notice of Allowance for the '788 patent application
2019-09-17 U.S. Patent No. D859,788 Issues
2019-11-00 Defendants allegedly send infringement complaints to Amazon.com regarding Plaintiffs' products
2019-11-13 Plaintiffs' counsel sends letter to Defendants detailing non-infringement arguments
2020-06-18 First Amended Complaint for Declaratory Judgment Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D859,788 - Enlarged over-garment with an elevated marsupial pocket

  • Patent Identification: U.S. Design Patent No. D859788, "Enlarged over-garment with an elevated marsupial pocket," issued September 17, 2019 (’788 Patent).

The Invention Explained

  • Problem Addressed: As this is a design patent, it does not address a technical problem but rather protects the novel, non-functional, ornamental appearance of an article of manufacture. (Compl. ¶116; ’788 Patent, Claim).
  • The Patented Solution: The patent claims the specific ornamental design for an oversized hooded garment. The claimed design, depicted in solid lines in the patent's figures, features a combination of visual elements including a wide, bulky torso, a large, puffy hood with a circular opening, and a generally square-shaped front marsupial pocket. The side view illustrates a hemline that is longer in the back and slopes downward from front to back. (’788 Patent, Figs. 1, 6, 7). The figures show the garment's body tapering inward towards the hemline. (’788 Patent, Fig. 1).
  • Technical Importance: The complaint does not cite evidence for the technical importance of the design, but the litigation itself suggests a competitive market for wearable blanket products where specific ornamental designs may be a key differentiator. (Compl. ¶¶40, 99).

Key Claims at a Glance

  • The ’788 Patent contains a single claim: "The ornamental design for an enlarged over-garment with an elevated marsupial pocket, as shown and described." (Compl. ¶116; ’788 Patent, Claim).
  • The essential elements of the design are defined by the visual appearance of the garment as depicted in the solid lines of Figures 1-10, including:
    • The overall oversized, wide-bodied shape of the garment.
    • The specific shape, size, and placement of the front marsupial pocket.
    • The shape and volume of the hood and its opening.
    • The contour of the hemline, including the relative lengths of the front and back.
    • The taper of the garment's body.

III. The Accused Instrumentality

Product Identification

  • The Plaintiffs' "Tirrinia® Hoodie" and other wearable blanket products. (Compl. ¶49).

Functionality and Market Context

  • The Tirrinia® Hoodie is described as a large sweatshirt or wearable blanket. (Compl. ¶49). The complaint alleges it is sold through various retail outlets, including Amazon.com, in a variety of colors and sizes. (Compl. ¶¶48, 50).
  • The complaint presents the Tirrinia® Hoodie as a direct competitor to the Defendants' "Comfy" product line. (Compl. ¶¶40, 99). The core of the Plaintiffs' non-infringement argument rests on specific, alleged visual differences between their product's design and the design claimed in the ’788 Patent. (Compl. ¶¶60-66). A photograph provided in the complaint shows the Tirrinia® Hoodie, a plush, oversized hooded garment. (Compl. ¶49, Exhibit C).

IV. Analysis of Infringement Allegations

The following table summarizes the Plaintiffs' allegations of non-infringement as detailed in the declaratory judgment complaint. The core of the design patent infringement test is whether an "ordinary observer" would find the two designs substantially the same. Plaintiffs argue they are not.

’788 Patent Allegations of Non-Infringement

Claimed Ornamental Feature (from ’788 Patent) Alleged Differentiating Feature of Tirrinia® Hoodie Complaint Citation Patent Citation
Garment body tapers inwardly toward the hemline Garment body has an outward taper at the hemline ¶61 Fig. 1
A narrow marsupial pocket covering approximately 1/3 of the torso width An enlarged front pocket covering approximately 2/3 of the torso width ¶62 Fig. 4
A substantially square pocket with straight sides A wide, rectangular pocket with curved sides ¶63 Fig. 1
A substantially angled hemline, significantly longer in the back than the front A generally horizontal hemline ¶65 Fig. 7
A substantially circular and puffy hood opening An elongated, teardrop-shaped hood opening that is thin ¶66 Fig. 1
  • Identified Points of Contention:
    • Scope Questions: A central question for the court will be how an ordinary observer perceives the overall visual impression created by the combination of features in the ’788 Patent. The dispute will focus on whether the specific differences alleged by the Plaintiffs, such as the pocket shape, hemline contour, and body taper, are significant enough to create a different overall appearance, or if they are minor variations that do not fool the ordinary observer. (Compl. ¶¶68-72).
    • Technical Questions: The complaint presents side-by-side visual comparisons to support its non-infringement arguments. For example, a visual comparison contrasts the alleged "inwardly" tapering body of the patented design with the "outwardly" tapering body of the Tirrinia® Hoodie. (Compl. ¶61). Another key visual contrasts the patent's "narrow pocket" with the accused product's pocket, which is alleged to be "nearly 2/3 width of torso." (Compl. ¶62). The evidentiary weight and accuracy of these photographic comparisons versus the patent's line drawings will be a point of contention. A further visual alleges a "substantially angled hemline" in the patent's side view versus a "generally horizontal" hemline on the accused product. (Compl. ¶65).

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of claim term construction. As a design patent, the claim consists of the drawings, and construction involves describing the overall visual appearance of the claimed design rather than defining textual terms. The dispute will center on a comparison of the overall visual effect of the accused products against the patented design.

VI. Other Allegations

  • Invalidity: Plaintiffs allege the ’788 Patent is invalid under 35 U.S.C. §§ 102 and 103 as anticipated or rendered obvious by prior art garments. (Compl. ¶118). They further allege invalidity for indefiniteness under § 112, arguing that the patent drawings improperly include lines that "appear to be solid lines, but at other points appear to be dashed (or broken) lines," making it impossible to discern the proper scope of the claimed design. (Compl. ¶¶122-123). Finally, they allege the design is primarily functional and thus invalid under § 171. (Compl. ¶125).
  • Unenforceability / Inequitable Conduct: Plaintiffs allege that during prosecution of the application for the ’788 Patent, Defendants failed to disclose material prior art references to the USPTO. (Compl. ¶133). These references were allegedly identified by a different patent examiner during the prosecution of a related utility patent application (the '502 application) filed by the Defendants, which was pending at the same time as the design patent application. (Compl. ¶¶130, 132). This alleged failure to disclose known, material prior art is asserted as a basis for inequitable conduct, which would render the patent unenforceable. (Compl. ¶135).
  • False Marking: The complaint alleges that Defendants are engaging in false marking under 35 U.S.C. § 292 by advertising on their website that products such as "The Comfy," "The Comfy Lite," and "The Comfy Kids" are covered by the ’788 Patent. (Compl. ¶145). Plaintiffs assert that these products have "substantial design differences" from the patented design and would not be seen as covered by an ordinary observer, and that this marking is done with an intent to deceive the public. (Compl. ¶¶153, 163).

VII. Analyst’s Conclusion: Key Questions for the Case

This declaratory judgment action appears to center on three critical questions for the court:

  1. A core issue will be one of visual comparison under the "ordinary observer" test: Would an ordinary observer, giving such attention as a purchaser usually gives, be deceived into purchasing the Plaintiffs' Tirrinia® Hoodie believing it to be the Defendants' patented design? The resolution will depend on whether the alleged differences in pocket shape, body taper, and hemline contour create a distinct overall visual impression.
  2. A key validity question will be one of scope clarity: Are the line drawings in the ’788 Patent sufficiently clear and consistent, particularly in their use of solid versus broken lines, to apprise one of ordinary skill of the scope of the claimed ornamental design as required by 35 U.S.C. § 112?
  3. A significant procedural question will be one of prosecution conduct: Does the alleged failure by the patent holder to submit prior art references—identified by the USPTO itself in a parallel utility patent prosecution—to the examiner of the ’788 design patent application rise to the level of inequitable conduct, potentially rendering the patent unenforceable?